PTAB

CBM2018-00026

Apple Inc v. Universal Secure Registry LLC

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Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Universal Secure Registry
  • Brief Description: The ’813 patent describes a system for authenticating a user's identity to enable a financial transaction. The system uses an electronic ID device with a biometric sensor to communicate with a central "Universal Secure Registry" (USR), which is a secure database storing user account information.

3. Grounds for Unpatentability

Ground 1: Claims 1-26 are unpatentable under 35 U.S.C. §101 as being directed to patent-ineligible subject matter.

  • Prior Art Relied Upon: This ground is based on the legal framework established in Alice Corp. v. CLS Bank Int’l and argues the claims are directed to an abstract idea implemented with generic, conventional computer components. No specific prior art patents or publications are combined to assert this ground.
  • Core Argument for this Ground: Petitioner argued that the challenged claims fail both steps of the Alice test for patent eligibility.
    • Alice Step 1 (Abstract Idea): Petitioner asserted that all claims are directed to the abstract idea of "verifying an account holder's identity based on codes and/or information related to the account holder before enabling a transaction." This was characterized as a longstanding and fundamental economic practice, analogous to a bank teller verifying a customer's identity before a withdrawal. Petitioner argued that limiting this pre-Internet problem to a computerized environment does not change its abstract nature. The core function was described as collecting, storing, and recognizing data—a task previously found to be abstract. Furthermore, Petitioner contended the claimed verification method is a mental process, as a person with a spreadsheet could perform the same comparison steps.
    • Alice Step 2 (Inventive Concept): Petitioner argued that the claim limitations, viewed individually and as an ordered combination, add nothing inventive to the abstract idea. The claims merely instruct the implementation of identity verification using conventional, generic computer hardware. The patent itself was cited as describing the system's components—such as a biometric sensor, processor, user interface, communication interface, and database—in a generic and functional manner. Petitioner emphasized that the patent does not disclose any improvement to computer functionality itself, but rather uses generic technology as a tool to automate a fundamental practice. The use of multiple information sources (biometric, secret information) to create encrypted authentication information was also argued to be a non-inventive, abstract process, as combining factors for verification is a routine concept. The dependent claims were argued to add only conventional variations, such as using specific codes, storing data in memory, or adding user interface features, which do not transform the abstract idea into a patent-eligible invention.

4. Key Claim Construction Positions

  • Biometric Input: Petitioner proposed this term be construed as "information about a user's physical characteristics, such as fingerprint, voice print, signature, iris or facial scan, DNA analysis, or personal photograph." This construction was argued to be critical to show that the claims recite a well-known, generic technology for user identification rather than a specific technical implementation.
  • Secure Registry: Petitioner proposed this term means "a database with access restrictions." This construction supports the argument that the central component of the claimed invention is a generic database performing conventional data storage and retrieval functions, rather than a novel technological structure.
  • Point-of-Sale Device: Petitioner proposed this term means "a device located at a point of sale capable of transmitting and/or receiving information related to a financial transaction." This construction frames the device as a generic terminal, reinforcing the argument that the claims simply apply an abstract idea in a conventional commercial setting.

5. Key Technical Contentions (Beyond Claim Construction)

  • Claims Are Not a "Technological Invention": As a predicate for a Covered Business Method (CBM) review, Petitioner argued the ’813 patent is not directed to a "technological invention." This argument centered on two points:
    • The claims recite only conventional, off-the-shelf technological features. The electronic ID device, processor, database, and POS terminal were all asserted to be indisputably well-known at the time of the invention and implemented in a conventional manner.
    • The patent does not solve a technical problem with a technical solution. Instead, it addresses the business problem of identity verification using generic computing functions (e.g., comparing data, executing commands) without improving the underlying technology.

6. Relief Requested

  • Petitioner requested institution of a CBM review and cancellation of claims 1-26 of the ’813 patent as unpatentable under 35 U.S.C. §101.